Table of Contents
- The Basics: What is a Trademark Assignment Agreement?
- When a Trademark Assignment Agreement is Needed
- The Consequences of Not Using This Agreement
- The Most Common Situations
- What Should be Included in This Agreement?
1. The Basics: What is a Trademark Assignment Agreement?
A Trademark Assignment Agreement is a written document that legally transfers a legally recognized word, phrase, symbol, and/or design (the “Trademark”) from the current owner (the “Assignor”) to the future owner (the “Assignee”).
Although intangible, a trademark is a valuable asset because customers instantly associate certain qualities with a recognized brand. This agreement allows the owner to properly transfer the goodwill of a business to another party.
A simple Trademark Assignment Agreement will identify the following basic elements:
- Effective Date: when the trademark is officially transferred to the new owner
- Trademark: describe the legally recognized word, phrase, symbol, and/or design, including the official trademark number if the mark has been registered with the U.S. Patent and Trademark Office (“USPTO”)
- Assignor: the current owner giving up ownership of the mark
- Assignee: the future owner giving money to obtain the mark
- Consideration: how much money is being paid for the mark
- Warranties: the Assignor guarantees that they are the true owner and have authority to transfer the mark
- Signatures: the Assignor and Assignee must both sign the agreement
- Notary Public: the agreement should be notarized if you expect to register the trademark in a foreign country
As a reference, people call this agreement by other names:
- Assignment of Intellectual Property Rights Agreement
- Assignment and Transfer Agreement
- Intellectual Property (IP) Assignment
- Transfer of Trademark Rights
- Trademark Purchase and Assignment Agreement
Trademark Assignment PDF Sample
The sample trademark assignment agreement below details an agreement between the assignor, ‘Jennifer B Terry’, and the assignee, ‘Wendy J Proulx.’ Jennifer B Terry agrees to transfer ownership of the trademark to Wendy J Proulx and to give up any further use of the trademark.Trademark Assignment Agreement
2. When This Agreement is Needed
A Trademark Assignment Agreement is commonly used to document a transfer of ownership of a trademark or service mark. A transfer of ownership is often needed when a product or company is being sold or purchased by another person or organization.
Two types of trademarks can be transferred:
Common Law or Unregistered
|Uses registered trademark symbol (R) or ®||Uses the trademark symbol (TM) or ™|
|Formally registered with the USPTO||Uses the service mark symbol (SM) or ℠|
|Enhanced rights because the public is on notice||Brand names and logos are automatically protected when a company uses the mark in the normal course of commerce|
|Mark appears in the USPTO’s Trademark Electronic Search System (TESS)|
3. The Consequences of Not Using This Agreement
Without a Trademark Assignment Agreement, there is no clear record of who currently owns the mark. Trademarks are often part of a company’s valuable assets and should therefore be treated like property.
|Loss of Time||Loss of Time|
|Loss of Money||Loss of Money|
|Mental Anguish||Mental Anguish|
4. The Most Common Situations
These are some of the most common situations in which a trademark assignment agreement is important:
|Startup company||Larger business|
|Business being aquired||Acquiring company|
|Company winding down its assets||Growing company|
|Company merging with another||Company merging with another|
5. What Should be Included in This Agreement?
A simple Trademark Assignment Agreement should generally have at least the following:
- Who currently owns the trademark and who will be the new owner
- What the mark consists of and any associated registration numbers
- Where any future disputes will be handled (“Governing Law”)
- When the trademark is officially transferred to the new owner
- Why the Assignor has the right to transfer the mark and associated goodwill
- How much the Assignee will pay to be the new owner of the mark
The term “trademark” is frequently used to refer to both a trademark and a service mark. Trademarks identify products or goods, while service marks identify services provided. For example, Outback Steakhouse is a service mark because food is being served, whereas its famous Bloomin’ Onion is a trademark because it refers to the restaurant’s specialty deep-fried appetizer.
In addition to words, phrases, or logos, a trademark can also include a slogan, name, scent, shape of a product or container, and a distinctive combination of musical notes. For example, even a color can be trademark if it acts purely as a symbol according to the 1995 U.S. Supreme Court case Qualitex Co. v. Jacobson Products Co., Inc.
Learn more about whether you should register your trademark from the USPTO Basic Facts about Trademark. If the mark is federally registered, the USPTO allows you to track assignments on their Trademark Query site. Do your homework and double check with the USPTO and in all 50 states that the Assignor actually owns the registered or unregistered mark and has the right to sell the mark. Due diligence can save you time and money later down the road.
Create Your Free Trademark Assignment Agreement in 5 min.
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Just because a trademark cannot be physically held does not mean the mark does not have a physical value. Forbes has valued Google’s trademark at a whopping $44.3 billion, while the Microsoft trademark came in right behind at a value of $42.8 billion. Properly recording an assignment allows you to clarify who owns the valuable mark.
If you do not want to transfer complete ownership of the mark, consider a Trademark License Agreement instead. A license gives you temporary permission to use the mark in some limited way. For example, a license allows you to use the mark for a certain amount of time or for a particular use or region of the country.
The United States Patent & Trademark Office ("USPTO") through the Assignment Recordation Branch records trademark assignments. Requests to record assignments are filed on line through the Electronic Trademark Assignment System ("ETAS") using https://etas.uspto.gov/. A trademark applicant can create and submit a trademark assignment recordation coversheet. You must also submit legal documentation to support the assignment. Recorded assignment information will be made a public record. The official filing fee for recording a trademark assignment is $40.00 for the first trademark application or trademark registration and $25.00 for the second or subsequent trademarks for the same trademark owner. There are special requirements for a trademark application filed on a bona fide intent-to-use basis, see our page entitled Trademark Assignments for more details concerning when an assignment can be filed for an intent-to-use application.
If an error is made while filing the trademark assignment, it may be possible to contact the Assignment Division to attempt to suspend the recordation if it was not filed yet. An applicant would be required to submit a written request that the recordation be cancelled and that there be a refund for the filing fee. If the assignment has been recorded it will not be cancelled. However, if the error is due to USPTO error, the Assignment Division may correct it without a fee. To correct the assignment records, a trademark owner must follow the procedure set forth in Trademark Manual of Examining Procedure ("TMEP") §503.06- §503.06(d).
Recording a document with the Assignment Branch does not necessarily change or update the ownership of record shown in the USPTO database. There are some circumstances where the ownership information may be automatically updated, such as an assignment of the entire interest and good will, a name change, a merger, or a nunc pro tunc assignment. Under these circumstances, it is not necessary for the trademark owner to contact the USPTO regarding the change of ownership or to file a request for a new certificate of registration to issue. In all other situations, the owner must file and notify the trademark office in writing that ownership has changed in order for the database to be updated.
The Trademark Database will show the last recorded owner. If you desire more information pertaining to the chain of title then one must view the Assignment Branch Database at http://assignments.uspto.gov/assignments. Examining attorneys must check assignment records to ensure that the owner of record in the Trademark Database has a clear chain of title. For more details regarding this issue see TMEP §504. Trademark owners can conduct research on assignments independently to see if the Trademark Database has been update by going to TARR (Trademark Application and Registration Retrieval) at http://tarr.uspto.gov.
There are other restrictions on automatic updates as well. The Trademark Database will not update automatically during the following time periods: (1) between approval for publication and issuance of registration; (2) between approval of publication and issuance of notice of allowance; (3) between approval of registration and issuance of registration; (4) or if the maximum number of ownership changes occurs during certain time periods, for example prior to publication, up to nine changes of ownership are permitted and between publication and registration up to nine additional changes of ownership are allowed.
Therefore, prior to the mark registering, a request to update the ownership information should be made in writing and directed to the examining attorney. If an assignment occurs after publication it will be handled consistent with the rules for amendments after publication. If the request is made between the issuance of the Notice of Allowance and the filing of the Statement of Use, then the request will be handled at the time of the evaluation of the Statement of Use.
Lastly, if an assignment is recorded post registration, then the Post Registration Division will not update the Trademark Database unless: (1) the registrant files a written request for amendment pursuant to Section 7(d) of the Trademark Act or (2) the owner takes action to file a §8 affidavit or §9 renewal application. The registrant must file the Section 7 Request even if they are not interested in a new registration certificate, but only are interested in updating the Trademark Database. If you have questions regarding your assignment recordation, please do not hesitate to contact our office for a courtesy consultation.